Summary
The Federal Circuit vacated an ITC determination that Converse's trademark in its Chuck Taylor shoe midsole design was invalid, holding that the ITC erred by failing to distinguish between alleged infringers whose first use began before versus after the trademark registration date. The court clarified that the presumption of secondary meaning from federal registration operates only prospectively from the registration date, not retroactively, and that for product-design trade dress, a plaintiff must prove secondary meaning as of each alleged infringer's first use without the presumption for pre-registration infringement. The court also set forth six factors for assessing secondary meaning, emphasizing that third-party uses must be substantially similar to the asserted mark and that the five-year period before the relevant date is most probative, and held that accused products must be substantially similar to the mark to infringe.
Topics
Practice areas
Questions Presented
- Whether the ITC erred in failing to distinguish between alleged infringers who began infringing before Converse obtained its trademark registration and those who began afterward.
- Whether the ITC applied the correct legal standards for determining whether a mark has acquired secondary meaning, particularly regarding the relevant time period, the requirement of substantial similarity for third-party uses, and the weight of survey evidence.
- Whether the ITC applied the correct standard for infringement by failing to require that accused products be substantially similar to the mark.
- Whether the ITC erred in addressing the validity of the registered mark when it was not necessary for the claims against the remaining parties.
Holdings
- The registration confers a presumption of secondary meaning only as of the date of registration and confers no presumption for the period before registration.
- The factors for assessing secondary meaning are: (1) association of the trade dress with a particular source by actual purchasers (survey evidence); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage. The five-year period under section 2(f) is the most relevant period for evaluating exclusivity of use.
- Accused products that are not substantially similar to the asserted mark cannot infringe.
- Converse did not waive the argument, because the opinion clarified the law in a way that was not previously settled.
Key quotations
“In any infringement action, the party asserting trade-dress protection must establish that its mark had acquired secondary meaning before the first infringing use by each alleged infringer.” (1117)
“Converse's registration confers a presumption of secondary meaning beginning only as of the date of registration and confers no presumption of secondary meaning before the date of registration.” (1118)
“The considerations to be assessed in determining whether a mark has acquired secondary meaning can be described by the following six factors: (1) association of the trade dress with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark.” (1120)
“In evaluating factor 2, the ITC should rely principally on uses within the last five years.” (1121)
“We also hold that accused products that are not substantially similar cannot infringe.” (1124)
Factual background
Converse owns a trademark registration for the midsole design of its Chuck Taylor All Star shoes, consisting of two stripes, a toe cap, a multi-layered toe bumper with diamonds and line patterns, and their relative positions. Converse has used the mark since 1932 and obtained registration on September 10, 2013. Converse alleged that various respondents imported shoes infringing the mark. The ITC found the registered mark invalid for lack of secondary meaning and also found that Converse had not established secondary meaning for the common-law mark. The ITC further found that if the mark were valid, it would be infringed by many accused products.
Procedural history
Converse filed a complaint with the ITC alleging violations of section 337 by various respondents. The ITC instituted an investigation. The ALJ issued an initial determination finding violations, but the ITC reversed, finding the registered mark invalid for lack of secondary meaning and affirming that the common-law mark also lacked secondary meaning. The ITC found that if either mark were valid, it would be infringed. Converse appealed.
Remand instructions
The case is vacated and remanded to the ITC for further proceedings consistent with the opinion, including reassessing secondary meaning with the correct standards (including the relevant date, the five-year period, substantial similarity for third-party uses, and the weight of the Butler survey), and reassessing infringement with the substantial similarity requirement.